SCOTUS Clarifies That Protection is Available for “Immoral or Scandalous” Trademarks

In alignment with its 2017 decision in the Matal v. Tam case which ruled that the disparagement clause of the Lanham Act violated the First Amendment’s free speech clause, the Supreme Court ruled last week that free speech protections also extend to “immoral or scandalous” trademarks. In Iancu v. Brunetti, SCOTUS ruled that the United States Patent and Trademark Office violated a trademark applicant’s free speech rights when it denied his application to protect the mark FUCT for apparel.

Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), states that no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.”

Interpretation of these prohibitions is both subjective and fluid, and could vary depending on the examining attorney assigned to any given file. This left applicants (and attorneys) with a good deal of uncertainty as to what constituted “immoral” or “scandalous” matter. In the Brunetti decision, the Court asserted that the “immoral or scandalous” bar, similar to the “disparagement” bar addressed in the Tam case, discriminates on the basis of viewpoint and “collides with this Court’s First Amendment doctrine.” The Court goes on to explain:

Expressive material is “immoral” when it is “inconsistent with rectitude, purity, or good morals”; “wicked”; or “vicious.” So the Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. And material is “scandalous” when it “giv[es] offense to the conscience or moral feelings”; “excite[s] reprobation”; or “call[s] out condemnation.” So the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.”

The statute therefor distinguishes between two opposed sets of ideas: “those aligned with conventional moral standards and those hostile to them.” The USPTO has refused to register marks that indicate “immoral” or “scandalous” views about things such as drug use, but has “approved registrations of marks expressing more accepted views on the same topics.”

Setting aside the known hurdles to obtaining U.S. federal trademark protection for marks used on goods or services that violate federal law, it is possible, under the Lanham Act, that a mark intended for use on perfectly legal goods or services that espouses a viewpoint on cannabis that strikes the examining attorney as “immoral” or “scandalous” could be refused registration on that basis. SCOTUS’s decision in the Brunetti case will now prevent that from happening, and we see this decision as win for the First Amendment.